Ex Parte 7189110 et al

Patent Trial and Appeal Board

Nov 27, 2012

95000253 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,253 04/11/2007 7189110 53422 7439
44564 7590 11/27/2012
BOND, SCHOENECK & KING, PLLC
10 BROWN ROAD, SUITE 102
ITHACA, NY 14850-1248
EXAMINER
GAGLIARDI, ALBERT J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/27/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

PASS & SEYMOUR, INC.,
Patent Owner and Appellant

v.

HUBBEL, INC.,
Requester and Respondent
______________

Appeal 2012-011443
Reexamination Control No. 95/000,253
United States Patent 7,189,110 B1
Technology Center 3900
______________

Before JOHN C. MARTIN, KEVIN F. TURNER,
and BRIAN J. McNAMARA, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner Pass & Seymour, Inc. (hereinafter “Patent Owner”) appeals
under 35 U.S.C. §§ 134(b) and 315(a)(1) from the Examiner’s rejections of
amended and new claims 1-52 for Savicki U.S. Patent 7,189,110 B1 (hereinafter
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“Savicki '110”).1 Third Party Requester Hubbell, Inc. (hereinafter “Requester”), a
party to this appeal under 35 U.S.C. §§ 134(c) and 315(b)(2), disputes Patent
Owner’s contentions.2
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We AFFIRM.

I. STATEMENT OF THE CASE
A. Related Appeals and Litigation
Patent Owner identifies as a related appeal the pending appeal to the Board
in Inter Partes Reexamination No. 95/000,200 for reexamination of Benoit et al.
Patent 6,994,585 B2 (hereinafter “the Benoit patent”), which is the parent of the
Savicki '110 patent. P.O. Br. 3, para. II.3 Requester additionally identifies, as a
related appeal, the pending appeal to the Board in Inter Partes Reexamination No.

1 Pass & Seymour, Inc. is identified as the real party in interest at page 3,
paragraph I of its “Brief on Appeal” (hereinafter “P.O. Br.”)
2 Hubbell, Inc. is identified as the real party in interest at page 1, paragraph I of the
“Respondent’s Brief of Third Party Requester Under 37 C.F.R. § 41.68”
(hereinafter “Req. Resp’t Br.”).
3 The appeal in the '200 proceeding has been assigned Appeal Number 2013-
001548.
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95/000,258 for reexamination of Savicki Patent 7,195,517 B1, which is a
continuation of the Savicki '110 patent. Req. Resp’t Br. 1, para. II.4
Requester also identifies the following litigation as related to this appeal:
(i) Pass & Seymour, Inc. v. Hubbell Incorporated, C.A. No. 07-cv-00272
(N.D.N.Y, filed Mar. 13, 2007) (involving the Savicki '100 patent and dismissed
for statistical reasons after denial of preliminary injunction motion); and (ii) Pass
& Seymour, Inc. v. Hubbell Incorporated, C.A. No. 07-cv-00017 (N.D.N.Y, filed
Jan. 5, 2007) (involving the Benoit patent and dismissed for statistical reasons). Id.
at 2, para. I.

B. This Reexamination Proceeding
This reexamination proceeding was initiated by a “Request for Inter Partes
Reexamination Under 37 C.F.R. § 1.913” (hereinafter “Request”), filed on April
11, 2007, and seeking reexamination of claims 1-46 (all of the original claims) of
the Savicki '110 patent. The Request proposed eighteen grounds of rejection under
35 U.S.C. § 102 or § 103(a), all relying on Heimann5 as the sole or primary
reference.
Reexamination was ordered on July 6, 2007.
Claims 1-46 were rejected under 35 U.S.C. § 102 or § 103(a) in a nonfinal,
first office action mailed on December 4, 2007.

4 The appeal in the '258 proceeding is still in the briefing stage.
5 Heimann U.S. Patent 4,842,551, as corrected by a Certificate of Correction dated
June 27, 1989.
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On February 4, 2008, Patent Owner filed a “Response to the Decision
Granting Inter Partes Reexamination” (hereinafter “February 2008 Response”), to
which the Examiner responded on March 11, 2009, with a “Notice of Defective
Paper in Inter Partes Reexamination,” indicating that the February 2008 Response
exceeds the 50-page limit set forth in 37 C.F.R. § 1.943.
On March 26, 2009, Patent Owner filed a “Redrafted Response to the
Decision Granting Inter Partes Reexamination” (hereinafter “March 2009
Response”), which (at 2-16) amended independent claims 1, 21, 25, and 35 and
added new claims 47-52 (including independent claim 48) (“March 2009
Amendments”). The March 2009 Response indicates (at 51) that it is
accompanied by several documents offered to prove commercial success and
copying, including “[s]everal emails from P&S marketing personnel listing the
various industry awards along with testimonials from various customers [i.e.,
“Case History” articles dated August 2004, March 2005, and July 2005] . . .
attached in Appendix II” and
“Hubbell promotional material [describing, inter alia, Hubbell SNAPConnect™
receptacles] . . . provided in Appendix III.”6 These testimonials and the

6 A copy of this Appendix III is included in the IFW file but not in the eDAN file
for this reexamination proceeding. However, a copy of an identical Appendix III
previously filed with the defective February 2008 Response is included in the
eDAN file.
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SNAPConnect promotional material are relied on in Patent Owner’s appeal brief
(at 31-32).7
In “Comments by Third Party Requester” filed on April 27, 2009, Requester
argues (at 2-4) that the amended and new claims are unpatentable under 35 U.S.C.
§ 112, first paragraph, for lacking written description support and under 35 U.S.C.
§ 314(a) for enlarging the scope of the claims. Requester (at 5-26) also proposes
various rejections of the claims under 35 U.S.C. § 103(a).
In an Action Closing Prosecution (hereinafter “ACP”) mailed May 10, 2010,
the Examiner rejected claims 1-52 on each of the following grounds:
(a) under 35 U.S.C. § 112, first paragraph, for lacking written
description support (ACP 8);
(b) under 35 U.S.C. § 112, second paragraph for being indefinite (id.
at 14);
(c) under 35 U.S.C. § 314(a) for “improper broadening” (id. at 18);
and
(d) under 35 U.S.C. § 103(a) for obviousness over Heimann in view
of other prior art. Id. at 19-53. The evidence of commercial success and copying
was found to be unpersuasive because it was not commensurate in scope with the
amended claims. Id. at 56-60.
On June 10, 2010, Patent Owner filed a “Response to the Action Closing
Prosecution” (hereinafter “June 2010 Response”), which (at 2-21) proposed further

7 Appendix I to the March 2009 Response, a supporting declaration by James
(Continued on next page.)
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amendments of the claims. This response was also accompanied by: (i) a
“Statement of Donald S. Bausch” (hereinafter “Bausch Declaration”), offered
(at 48) to prove commercial success; and (ii) a “Statement of Clarke C. Ayer”
(Ayer Declaration”), offered (at 49) to prove copying.
In “Comments by Third Party Requester Under 37 C.F.R. § 1.951” filed
July 12, 2010, Requester argued (at 1-2) that the proposed amendments and the
Bausch and Ayer declarations are belated and should be denied entry, suggested
(at 4-13, 15-19) new rejections of the proposed amended claims, and argued (at 13-
15) that the Bausch and Ayer declarations are also insufficient on the merits.
In a Right of Appeal Notice (“RAN”) mailed January 28, 2011, the
Examiner, citing 37 C.F.R. § 1.116(b), denied entry of the June 10, 2010, proposed
amendments because “the proposed amendment touches the merits of the patent
under reexamination, yet no showing of good and sufficient reasons why the
amendment is necessary and was not presented earlier has been made.” RAN 4-5.8

The Examiner repeated all of the rejections made in the Action Closing
Prosecution (id. at 12-58), found the evidence relied on to prove commercial

Osterbrock, is not relied on in Patent Owner’s briefs.
8 37 C.F.R. § 1.116 is cited in 37 C.F.R. § 1.951, which provides in relevant part:
(a) After an Office action closing prosecution in an inter partes
reexamination, the patent owner may once file comments limited to
the issues raised in the Office action closing prosecution. The
comments can include a proposed amendment to the claims, which
amendment will be subject to the criteria of § 1.116 as to whether or
(Continued on next page.)
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success and copying (including the Bausch and Ayer declarations) insufficient on
the merits (id. at 80-86), and objected to the drawings under 37 C.F.R. § 1.83(a) for
failing to show every feature recited in the amended claims. Id. at 10-11. Patent
Owner did not file a petition challenging the Examiner’s refusal to enter the June
10, 2010, proposed amendments.
A notice of appeal was filed by Patent Owner on February 24, 2011.
Patent Owner’s “Brief on Appeal” was filed on April 25, 2011.
The “Respondent’s Brief of Third Party Requester Under 37 C.F.R. § 41.68”
was filed on May 25, 2011. Requester did not file a notice of cross-appeal.
The Answer, mailed February 28, 1012, explains that “[t]he Right of Appeal
Notice (RAN) mailed on 28 January 2011, including all of the grounds of rejection,
determinations of patentability, and explanations set forth in the RAN is
incorporated by reference” and states that “[t]he amendment(s) filed on 6/10/2010
has/have not been entered.” Answer 4 (underlining omitted).
Patent Owner filed a “Rebuttal Brief” on March 8, 2012.9

C. The Invention Described in the Savicki '110 Patent

not it shall be admitted.
9 We note that any arguments not appearing in the briefs are treated as waived.
See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or authorities not included in the
brief permitted under this section or §§ 41.68 and 41.71will be refused
consideration by the Board, unless good cause is shown.”).
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The invention described in the Savicki '110 patent is a “wiring system”
comprising a “plug connector” and a “wiring device.” Savicki '110 patent 2:15-20,
Abstract.

Figure 1 is a perspective view of an embodiment of the wiring system, which
includes a plug connector 20 and a wiring device 30. Id. at 3:66-4:3. Plug
connector 20 includes a body member 200 having contacts disposed therein (not
shown in this view), each of which is “terminated to one of the plurality of wires
12.” Id. at 4:5-6. Wiring device 30 includes a cover 32, a body 36, and a generally
planar ground strap 34 disposed between cover 32 and body 36. Id. at 4:8-10. The
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body 36 has a receptacle 360 that is configured to accept plug connector 20 and
includes contacts configured to mate with the plug contacts. Id. at 4:14-21.

As explained in greater detail below, the March 2009 Amendments, inter
alia, amended the original independent claims and added a new independent claim
to: (i) recite (in the body of each claim) specific structural details of the plug
connector and the electrical wiring device; and (ii) recite (in the preamble of each
claim) that the electrical wiring system is “for use in an AC electrical power
distribution circuit including a plurality of AC electric power transmitting wires
disposed between an AC power distribution point and a device box, the plurality of
AC electric power transmitting wires being routed into an interior portion of the
device box.” Claims App. (P.O. Br.).
Figure 3 is reproduced below.
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Figure 3 is an exploded view of a wiring device 30 in accordance with a first
embodiment. Id. at 3:26-27. Ground strap 34, which is “generally planar” (id. at
4:9), is shown having an aperture on either side of a central portion 344 to
accommodate a neutral contact assembly 42 and a hot contact assembly 44,
respectively. Id. at 5:1-4. The following language of amended claim 1 (with the
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amendatory underlining and bracketed text omitted) reads on neutral contact
assembly 42, for example, as follows:10
the neutral contact assembly [42] being characterized by a non-linear
configuration along a major longitudinal axis thereof and including a
lateral interconnective portion having a major surface disposed
substantially parallel to the lateral side walls [of wiring device body
36] and connected to at least one user-accessible contact structure
offset therefrom such that . . . the user-accessible neutral contacts
[420, 424] are disposed in communication with corresponding ones of
the at least one set of user-accessible receptacle outlet apertures [322],
[the] lateral interconnective portion also including a device contact
structure substantially offset from the lateral interconnective portion
such that . . . a neutral device contact [422] along with at least portions
of . . . the user-accessible neutral contacts [420, 424] are disposed
within an interior portion of the back wall [of body 36] offset from the
lateral interconnective portions . . . .
The claim uses the same language to describe hot contact assembly 44.
The following language of the same claim (with amendatory underlining and
bracketed text omitted) reads on ground strap 34 (Figure 3), neutral device contact
422, hot device contact 442, and body 36 as follows:
the electrical wiring device [30] including a mounting assembly [34]
having a ground device contact [346], the ground device contact
[346], the hot device contact [442], and the neutral device contact
[422] forming a plurality of device contacts, the back wall [of body
36] including a receptacle [360] configured to accept the plug
connector [20], the plurality of device contacts being configured to
mate with the

10 Claim 1 is reproduced infra including the underlining and the bracketed text.
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plurality of plug contacts when the plug connector is inserted into the
receptacle.
Figure 5 of Savicki '110 is reproduced below.

Figure 5 is an exploded view of a wiring device in accordance with a second
embodiment, in which ground strap 34 of Figure 3 has been replaced with a
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modified ground strap 39, a ground plate 38, and an insulator member 50. Id. at
5:42-46. The central portion 395 of ground strap 39 does not interconnect the
proximal and distal mounting yokes 390, which instead are connected only by two
lateral support members 392 identical to those employed in ground strap 34. Id. at
5:46-50. Insulator member 50 electrically isolates ground plate 38, which has the
ground contacts, from modified ground strap 39. Id. at 5:51-55.

D. The Claims
The claims as reproduced in the Claims Appendix to Patent Owner’s appeal
brief are the claims as amended by the March 2009 Amendments. As discussed in
more detail below, the Examiner’s refusal to enter the June 10, 2010, proposed
amendments is not an appealable matter.
The independent claims are amended claims 1, 21, 25, and 35 and new
claim 48. Because the claims are rejected under 35 U.S.C. § 112, first paragraph,
for lacking written description support and under 35 U.S.C. § 314(a) for improper
broadening, claim 1 as reproduced below includes the amendatory underlining and
bracketed text:
1. An electrical wiring system for use in an AC electrical
power distribution circuit including a plurality of AC electric power
transmitting wires disposed between an AC power distribution point
and a device box, the plurality of AC electric power transmitting wires
being routed into an interior portion of the device box, the system
comprising:
a plug connector including a plurality of plug contacts and a
termination arrangement[, the plug connector being] configured to
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terminate [a] the plurality of AC electric power transmitting wires
such that electrical continuity is established between the AC power
distribution point and the plurality of plug contacts, the plug
connector and the termination arrangement not including any
attachment device configured to affix the plug connector and the
termination arrangement to the device box; and
an electrical wiring device including a cover member having at
least one set of user-accessible receptacle outlet apertures disposed
therein, a body member including a back wall, the back wall being
connected to lateral side walls, the body member including a hot
contact assembly and a neutral contact assembly disposed therein,
each of the hot contact assembly and the neutral contact assembly
being characterized by a non-linear configuration along a major
longitudinal axis thereof and including a lateral interconnective
portion having a major surface disposed substantially parallel to the
lateral side walls and connected to at least one user-accessible contact
structure offset therefrom such that user-accessible hot contacts and
the user-accessible neutral contacts are disposed in communication
with corresponding ones of the at least one set of user-accessible
receptacle outlet apertures, each lateral interconnective portion also
including a device contact structure substantially offset from the
lateral interconnective portion such that a hot device contact and a
neutral device contact along with at least portions of the user-
accessible hot contacts and the user-accessible neutral contacts are
disposed within an interior portion of the back wall offset from the
lateral interconnective portions, [and a ground strap disposed between
the cover member and the body member, the body member]the
electrical wiring device including a mounting assembly having a
ground device contact, the ground device contact, the hot device
contact, and the neutral device contact forming a plurality of device
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contacts, the back wall including a receptacle configured to accept the
plug connector [and a plurality of device contacts], the plurality of
device contacts being configured to mate with the plurality of plug
contacts when the plug connector is inserted into the receptacle.
Claims App. (P.O. Br.).

E. The Issues
Patent Owner requests review of the following decisions of the Examiner:
1. The Examiner’s refusal to enter the June 10, 2010, proposed
amendments. RAN 4.
2. The objection to the drawings under 37 C.F.R. § 1.83(a) for failing to
show every feature recited in the amended and new claims. Id. at 10.
3. The rejection of claims 1-52 under 35 U.S.C. § 112, first paragraph, for
lacking written description support. Id. at 12.
4. The rejection of claims 1-52 under 35 U.S.C. § 112, second paragraph,
for indefiniteness. Id. at 18.
5. The rejection of claims 1-52 under 35 U.S.C. § 314(a) for enlarging the
scope of the original patent claims in one or more respects (i.e., improper
broadening). Id. at 22.
6. The rejections of claims 1-52 under 35 U.S.C. § 103(a) for obviousness
over Heimann considered in combination with one or more of the following
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additional references: Bonilla,11 Mehta '350,12 Mehta '657,13 First Alert,14 BRK,15
Libby,16 Bowden,17 Crofton,18 Haun,19 Tibolla,20 Kruse,21 Misencik,22 Savicki
'144,23 Sundquist,24 Leviton,25 Tansi,26 Bryant,27 and the Pass & Seymour
brochure.28 Id. at 23-58. Each claim is based, in whole or in part, on the
combination of Heimann in view of “Bonilla, Mehta '350, or Mehta '657.” See,
e.g., the rejection of claim 1 at RAN 23. Most of the claims are alternatively
rejected over Heimann in view of “Bonilla, Mehta '350, or Mehta '657,” further in
view of “First Alert, BRK, and Libby.” 29 See, e.g., the rejection of claim 1 at

11 Bonilla et al. U.S. Patent 5,839,908.
12 Mehta U.S. Patent 5,472,350.
13 Mehta et al. U.S. Patent 5,546,657.
14 First Alert™, User’s Manual, Smoke and Fire Alarms (July 2004).
15 BRK Electronics, Model SC120B—User’s Manual.
16 Libby U.S. Patent 5,975,938.
17 Bowden U.S. Patent 5,006,075.
18 Crofton U.S. Patent 5,113,045.
19 Haun U.S. Patent 6,377,427 B1.
20 Tibolla U.S. Patent 4,217,619.
21 Kruse et al. U.S. Patent 6,774,307 B2.
22 Misencik U.S. Patent 5,224,009.
23 Savicki U.S. Patent 6,657,144 B2.
24 Sundquist U.S. Patent 3,369,211.
25 Leviton, Wiring Device Catalog D-200 (1978).
26 Tansi U.S. Patent 4,203,638.
27 Bryant, Wiring Device Catalog BDB-1506 (May 1994).
28 Pass & Seymour, PlugTail™ Wiring Devices, brochure (April 2004).
29 The exceptions are dependent claims 8, 49, and 50, which are rejected only over
Heimann in view of Bonilla, Mehta '350, or Mehta '657,” further in view of “First
Alert, BRK, and Libby.” RAN 33, 57, and 58.
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RAN 26. The rejections that do not rely on “First Alert, BRK, or Libby” are
referred to by Patent Owner, and by us below, as the “first alternative rejection[s],”
while the rejections that do rely on these references are referred to as the “second
alternative rejection[s].” P.O. Br. 23. The various combinations of references
applied to the claims are set forth in the attached Appendix -- Tables of Rejections.
As evidence of commercial success and copying, Patent Owner relies on the
Bausch and Ayer declarations and other documents mentioned above.

II. DISCUSSION
A. The Examiner’s Refusal To Enter the June 10, 2010, Proposed
Amendments
Patent Owner argues (P.O. Br. 11) that the Examiner’s refusal to enter Patent
Owner’s June 10, 2010, amendments is improper because the Examiner incorrectly
concluded that Patent Owner failed to provide “good and sufficient reasons” for
them, as required by 37 C.F.R. § 116(b), and asks (id. at 13) that the proceeding be
remanded to the Central Reexamination Unit for entry of these amendments and
consideration of the arguments based thereon. As correctly noted by Requester,
“the non-entry of the Patent Owner’s June 10, 2010 proposed amendments under
37 C.F.R. § 1.116(b) is not an appealable issue. Moreover, because the time for
properly petitioning the non-entry of the proposed claim amendments has passed,
such issue is waived.” Req. Resp’t Br. 5. See MPEP § 2673.02 (8th ed., rev. 7,
July 2008):
In the event that an amendment submitted by the patent owner
after the ACP has not been entered because the amendment does not
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comply with the requirements of 37 C.F.R. 1.116 (see 37 CFR
1.951(a)), the patent owner may file a petition under 37 CFR 1.181
requesting entry of the amendment. The petition under 37 CFR 1.181
must be filed within the time period for filing a notice of appeal or
cross appeal, if appropriate (see 37 C.F.R. 1.953(c)).

B. The Examiner’s Objection to the Drawings
The Examiner objected to the drawings for failing to illustrate various
features recited in the claims as amended by the March 2009 Amendments, such as
the “device box” of claim 1. RAN 10. We agree with Requester that these
objections constitute a petitionable rather than an appealable matter. Req. Resp’t
Br. 5. See MPEP § 706.01 (“The practical difference between a rejection and an
objection is that a rejection, involving the merits of the claim, is subject to review
by the Board of Patent Appeals and Interferences, while an objection, if persisted,
may be reviewed only by way of petition to the Director of the USPTO.”).

C. The Rejection of Claims 1-52 Under 35 U.S.C. § 112, Second Paragraph
In order to satisfy the second paragraph of § 112, the claims “must set out
and circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Johnson, 558 F.2d 1008, 1015 (CCPA 1977) (quoting In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971)). If the language of the claim is such
that a person of ordinary skill in the art could not interpret the metes and bounds of
the claim so as to understand how to avoid infringement, a rejection of the claim
under 35 U.S.C. 112, second paragraph, would be appropriate. See Morton Int’l,
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Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993) (cited in MPEP
§ 2173.02).

1. “[A] plurality of AC electric power transmitting wires” (claim 1)
The “plurality of wires 12” in Savicki '100 (Savicki '100 patent specification
4:6), also referred to as “electrical wiring” (id. at 1:30-36) and described as being
terminated by plug connector 20 (Fig. 1), consists of hot, neutral, and ground
wires. Id. at 5:7-15. In original independent patent claims 1, 21, 25, and 35 the
phrase “plurality of wires” was broad enough to read on the hot and neutral wires
without including the ground wire, as evidenced by original dependent claims 5
and 6, reproduced below.
5. The system of claim 1, wherein the plurality of wires
includes an AC phase conductor and an AC neutral conductor.
6. The system of claim 5, wherein the plurality of wires
includes a ground conductor.
Id. at 6.
As a result of the March 2009 Amendments, the amended and new
independent claims 1, 21, 25, 35, and 48 recite “a plurality of AC electric power
transmitting wires” instead of “a plurality of wires.”30 The Examiner has
concluded that this new claim language is indefinite because it is not clear whether
the claim phrase “power transmitting wires” reads on a neutral wire and/or a

30 Also, claims 5 and 6 as amended do not identify the wires that comprise the
recited “plurality of AC electric power wires.”
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ground wire in addition to a hot wire or wires.31 As support for the rejection, the
Examiner cites “several inconsistencies throughout the disclosure” (id. at 63),
referring to the disclosure of the parent Benoit patent (id. at 18), which is
incorporated by reference into Savicki '100 (at 1:6-10). One of the cited passages
in Benoit explains that “[a] portion of the plurality of wires are configured to
transmit electrical power provided by an electrical power distribution system.”
Benoit, Abstract (emphasis added). Another cited passage, from Benoit’s
“Background of the Invention,” states the following about prior-art three-phase
power systems:
[1] As those of ordinary skill in the art recognize, five wires are
employed. [2] Three phase power includes three “hot” or “live”
wires. [3] Each of these wires transmits electrical power that is 120
degrees out of phase with the other two hot wires. [4] The other two
wires are the neutral conductor and the ground wire. [5] Three phase
power typically comes from the power utility via four wires: the three-
phase wires, and the neutral. [6] If the current flowing through each
of the phases is equal, no current will flow through the neutral. [7]
The

31 The Examiner and Appellant agree that this new claim language excludes a
communication wire, such as the communication wire 14 shown in Benoit’s
Figure 10. See P.O. Br. 16; RAN 20 (“the broadest reasonable interpretation of
‘AC electric power transmitting wires’ would tend to distinguish over AC
communication wires (e.g., telephone or network wires).”).
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neutral wire is typically connected to the building ground at the
structure’s main distribution panel.
Id. at 1:39-50 (sentence numbering added to facilitate following discussion).32 The
Examiner, presumably referring to sentences 2 and 3, states:
On that basis, it could be considered that only the “li[v]e” wires would
transmit power. On the other hand, a person of ordinary skill in the
art would consider that in unbalanced-load situations and fault
situations, both the neutral and ground wires could and would carry
current such that all the wires could be considered power transmitting
wires. It would also be appreciated by a person o[f] ordinary skill in
the art that all of the conductors (not just a portion) would at least be
capable of transmitting AC power. As such, it is unclear whether the
term “plurality of AC power transmitting wires[”] is being used to
distinguish between the “hot” wires and the grounded conductors [i.e.,
the neutral conductor and the ground wire], or whether the term has
some other meaning.
RAN 18-19.
Regarding the neutral wire in the three-phase system described by Benoit,
Patent Owner argues that the recited “plurality of AC power transmitting wires”
would have been understood to refer to the neutral wire as well as the three live (or
hot) wires. See P.O. Br. 16 (“[A] PHOSITA [person having ordinary skill in the
art] would know that the neutral wire does not conduct when the current flowing

32 See Moore, 439 F.2d at 1235 (“the definiteness of the language employed must
be analyzed--not in a vacuum, but always in light of the teachings of the prior art
and of the particular application disclosure as it would be interpreted by one
(Continued on next page.)
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through each of the phases is equal, but does otherwise, because the subject matter
is common knowledge in the field of the invention. Benoit 1:46-47.”). We agree.
This interpretation is consistent with sentence 5 of the above-quoted Benoit
passage, which states that “[t]hree phase power typically comes from the power
utility via four wires: the three-phase wires, and the neutral.” In view of this
sentence, it is clear that the point of sentences 1 and 2, relied on by the Examiner,
is to explain the phase relationships between the currents carried by the three hot
wires rather than to define the power transmitting wires as including only the hot
wires.
Turning now to the ground wire in Benoit’s three-phase system, Patent
Owner has made what appear to be inconsistent statements regarding whether the
claim language in question should be understood as being readable on this ground
wire. On one hand, Patent Owner appears to be arguing in the following passage
that the recited “plurality of AC power transmitting wires” is the same as the
“electrical wiring” described in the Savicki '100 specification, which includes the
ground wire:
Savicki shows, e.g., AC receptacle outlets formed in the front face 32
of the wiring device 30. The openings (320, 322, and 324)
accommodate hot, neutral and ground blades of a standard AC power
plug. Savicki at 5: 4-11; Fig. 3. The term AC electric power
transmitting wires and the term electrical wiring described in the
Savicki patent are synonymous.

possessing the ordinary level of skill in the pertinent art.”).
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P.O. Br. 16. On the other hand, Patent Owner’s “Summary of the Claimed Subject
Matter” reads the “AC electric power transmitting wires” of claim 1 on “Benoit
1: 53-55, 5: 3-6, 18-21; Savicki 1: 34-36.” Id. at 3-4. The cited lines in column 1
of Benoit state: “These circuits may employ three wires, a line conductor (hot
wire), a neutral conductor, and a ground. Some circuits may only employ two
wires, the line conductor and the neutral conductor.” (Emphasis added.) The
cited lines in column 5 of Benoit similarly explain:
The present invention may be configured to accommodate 2 wire
systems and three-phase (5 wires) systems, as well as the 3-wire
system shown. . . .
. . . When plug 20 is installed in device 30, electrical continuity
is established between the plurality of wires 12 and the wiring device.
Thus, when wires 12 are energized, power is supplied to output
receptacles 314.
Benoit 5:3-6, 18-21 (emphasis added).33
We conclude that the recited “plurality of AC power transmitting wires”
would not have been understood to be referring to a ground conductor. This
interpretation is consistent with Benoit’s above-quoted statement that “[a] portion
of the plurality of wires are configured to transmit electrical power provided by an
electrical power distribution system.” Benoit, Abstract. The Examiner has not
identified any language in the written description or the claims that might have
been understood to suggest that the “AC power transmitting wires” include a

33 The cited lines in Savicki '100 do not identify the number or function of the
wires.
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ground wire. Thus, even assuming for the sake of argument that the Examiner is
correct to opine that “in . . . fault situations, . . . the . . . ground wire[] could and
would carry current” (RAN 18-19), this position describes a condition that would
not have been understood to constitute a power transmitting function.
As an alternative basis for the rejection, the Examiner states that
even if it was clear which of the individual wires correspond to
“power transmitting” wires and which wires do not correspond to
power transmitting wires, the claim limitation would still be
indefinite. That is because Patent Owner also seems to be relying on
this term to distinguish between the plurality of AC power
transmitting wires (140) as taught [by] Heimann and the plurality of
wires (12) as disclosed by Savicki ['110], but there does not appear to
be any rational reason that they should be distinguished from each
other. To those of ordinary skill in the art, an AC electrical “hot” wire
is a “hot” wire whether it located at the distribution panel, a junction
box, a device box, an extension cord plugged into an electrical outlet,
or within the connected electrical product or appliance. The same
rational applies to both the neutral wire and the equipment ground.
RAN 19. We agree with Patent Owner that this is not an accurate description of
Patent Owner’s position. Instead, as noted by Patent Owner,
Patent Owner’s argument is based on structure and not on function.
The preamble of each independent claim reads “. . . a plurality of AC
electric power transmitting wires disposed between an AC power
distribution point and a device box, the plurality of AC electric power
transmitting wires being routed into an interior portion of the device
box.”
P.O. Br. 17. The merits of this argument are addressed below in the discussion of
the rejections under 35 U.S.C. § 103(a).
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2. Dependent claim 5
Claim 5 as amended reads as follows:
5. The system of claim 1, wherein the back wall is
characterized by a central longitudinal axis parallel to the lateral side
walls, the user-accessible hot contact and the user-accessible neutral
contact of the at least one integrally connected user-accessible
contact structure are disposed between the central longitudinal axis
and their respective lateral interconnective portions.
Claims App. (P.O. Br.) (italics added; amendatory underlining and bracketed text
omitted). The Examiner concluded that “[t]here is insufficient antecedent basis”
for the italicized language. RAN 21. Because the Examiner does not contend that
the phrase “integrally connected” is indefinite, we understand the Examiner’s
position to be that it is improper to recite “the at least one integrally connected
user-accessible contact structure” (emphasis added) without first reciting (in claim
5 or parent claim 1) “at least one integrally connected user-accessible contact
structure.”
Patent Owner’s argument, reproduced below, is not responsive the rationale of the
rejection:
The use of the additional word “integrally” in claim 5 does not render
it indefinite. A PHOSITA would understand the bounds of claim 5
when read in light of the specification since the user accessible contact
structures (e.g., 420, 424) are shown as being integrally connected to
the lateral interconnective portion. Savicki at Fig. 3.
P.O. Br. 17 (footnote omitted).
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Because patent Owner has failed to address, let alone demonstrate error in, the
Examiner’s rationale, we sustain the U.S.C. § 112, second paragraph, rejection of
claim 5 and its dependent claim 6.34

3. Claim 25 (“[T]he ground strap”)
The Examiner properly concluded, in our view, that independent claim 25 is
indefinite because it fails to provide any antecedent basis for the phrase “the
ground strap,” which appears in the last clause of that claim. RAN 21. As shown
below, the March 2009 amendment of claim 25 replaced the initial occurrence of
“ground strap” (in the phrase “a ground strap”) with the term “a mounting
assembly” without similarly changing the subsequently recited “the ground strap”
to “the mounting assembly”:

34 See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (an
appellant may attempt to overcome an examiner’s obviousness rejection on appeal
to the Board by: (1) submitting arguments and/or evidence to show that the
examiner made an error in either (a) an underlying finding of fact upon which the
final conclusion of obviousness was based or (b) the reasoning used to reach the
legal conclusion of obviousness; or (2) showing that the prima facie case has been
rebutted by evidence of secondary considerations of nonobviousness”); see also id.
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
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[and a ground strap disposed between the cover member and the body
member, the body member] the electrical wiring device further
including a mounting assembly having a ground device contact
disposed in the body member, the ground device contact, the hot
device contact, and the neutral device contact forming a plurality of
device contacts, the back wall including a receptacle configured to
accept the plug connector [and a plurality of device contacts], the
plurality of device contacts being configured to mate with the plurality
of plug contacts when the plug connector is inserted into the
receptacle, a distance from the ground strap to the back wall
being[major surface is] less than [2.5 inches] a predetermined
distance.
Claim App. (P.O. Br.) (emphasis added). Patent Owner’s argument that “[a]
PHOSITA would understand that the terms ground strap and mounting strap are
synonymous” (P.O. Br. 18) is unpersuasive. It is not clear from the language of the
amended claim whether the term “the ground strap” refers to the recited “a
mounting assembly,” a part thereof, or to a different element.
We therefore sustain the rejection on this ground of claim 25 and the
rejection of dependent claims 26-34, which are not separately argued as to this
ground.

4. Claims 27 and 30
The Examiner offers additional reasons for concluding that dependent claims
27 and 30, which depend on claim 25, are indefinite. Although, as noted above,
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claims 27 and 30 are indefinite for the same reasons as parent claim 25, we address
these additional reasons in the interest of completeness.
Claim 27 provides that “the predetermined distance is such that a thickness
of the electrical wiring device between the back wall and a front major surface of
the cover member is approximately 1.1 inches or less[is less than 1.0 inches].”
Claims App. (P.O. Br.). Referring to Figure 2 of Savicki '110, the claimed
“distance between the back wall and a front major surface of the cover member”
includes: (i) the distance y between ground strap 34 and back wall rear surface 362,
which is described as between approximately 0.635 inches and 2.5 inches (‘110
patent specification 4:54-57); and (ii) the thickness of cover member 32, which is
described as typically 0.358 inches. Id. at 4:58-59. The Examiner states that
as recited, the “predetermined distance” is necessarily dependent on
the distance [y] between the ground strap and the front major surface
of the cover member, which is not predetermined. And, since the
distance between the ground strap and the front major surface of the
cover member is neither fixed nor based on any known standard, the
“predetermined distance” is rendered indefinite d[ue] to the reference
to another distance that is variable. See MPEP 2173.05(b).
RAN 21. We will not sustain the separate rejection of claim 27. Even though, as
pointed out above, claim 25 is indefinite for reciting a predetermined distance
between “the ground strap” and the back wall, there is nothing indefinite about
describing the thickness of the electrical wiring device between the back wall and a
front major surface of the cover member as being “approximately 1.1 inches or
less,” as recited in claim 27.
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For similar reasons, we do not agree with the Examiner’s conclusion that
claim 30 is indefinite for reciting that “the predetermined distance is such that a
distance from the mounting assembly to an exposed end of the plug connector is
approximately 1.1 inches or less.” Claims App. (P.O. Br.) (underlining omitted).

5. Conclusion Regarding § 112, Second Paragraph, Rejection
The rejection of claims 1-52 under 35 U.S.C. § 112, second paragraph, is
sustained with respect to claims 5, 6, and 25-34 and not sustained with respect to
claims 1-4, 7-24, and 35-52.

D. The Rejection of Claims 1-52 Under 35 U.S.C. § 112, First Paragraph
An examiner, in rejecting claims under the written description requirement
of 35 U.S.C. § 112, first paragraph, has the initial burden of establishing by a
preponderance of evidence why a person skilled in the art would not recognize in
an applicant’s disclosure a description of the invention defined by the claims. In re
Wertheim, 541F.2d 257, 263 (CCPA 1976). “A written description requirement
issue generally involves the question of whether the subject matter of a claim is
supported by [conforms to] the disclosure of an application as filed.” MPEP
§ 2163.01 (brackets in original).

1. The “device box” and “a plurality of AC power transmitting wires”
The Examiner found that “the limitation relating to a ‘device box’ and ‘a
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plurality of AC electric power transmitting wires’ relate to new aspects of the
invention that were not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at the time
the application was filed, had possession of the claimed invention.” RAN 13-14.
More particularly, the Examiner explained that
the embodiments of the invention as currently recited are generally
directed to a combination system including a first subcombination
directed to a plug connector and a wiring device, and a second
subcombination directed to a[n] AC power distribution point and a
device box with the second subcombination including at least a
“plurality of AC electric power transmitting [wires being] routed into
an interior [portion] of [the] device box.”
[T]here is no specific support for a combination invention
including both the originally claimed first subcombination and the
newly recited second subcombination wherein the second
subcombination specifically includes at least a “plurality of AC
electric power transmitting routed into an interior portion of a device
box.”
Id. at 14 (emphasis added). We agree with Patent Owner (P.O. Br. 15) that support
for the currently claimed subject matter can be found in the description of the
rough-in stage in Savicki '110’s “Background of the Invention,” which explains:
During the rough-in stage either conduit or armored cable is
placed throughout the structure as per the build-out plans. Junction
boxes and wiring device boxes are also installed throughout the
structure. Junction boxes are deployed to house connection points
where two or more conductors are to be joined. Wiring device boxes
are deployed at locations where electrical service is desired. After the
boxes have been placed in the structure, the electrical cabling is pulled
through the conduits. At the end of this step in the process, electrical
wiring is disposed between the distribution panel and each wiring
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device box. The leads from the electrical wiring extend from the
boxes and are visible and accessible for the next phase of the
installation process.
Savicki '110 at 1:27-36 (emphasis added). One skilled in the art would have
understood that the inventor contemplated performing these same prior-art rough-
in steps prior to installing Savicki '110’s plug connectors and electrical wiring
devices. The rejection of the claims on this ground therefore is not sustained.

2. The “not including any attachment device” limitation
Claim 1 was amended to recite “the plug connector and the termination
arrangement not including any attachment device configured to affix the plug
connector and the termination arrangement to the device box.” Claims App.
(P.O. Br.). The other independent claims were amended to recite the same or
similar language. As addressed in greater detail in the discussion of the rejections
based on prior art, this language was added in an effort to distinguish over
Heimann’s clamp receptacle 130.
The Examiner, after acknowledging that “a lack of literal basis in the
specification for a negative limitation may not be sufficient to establish a prima
facie case for lack of descriptive support,” citing Ex parte Parks, 30 USPQ2d
1234, 1236 (BPAI 1993) (cited at MPEP § 2173.05(i)), states that “in this case, the
negative limitation in regard to an ‘attachment device’ that may or may not operate
to affix the plug connector or the termination arrangement to a device box is an
entirely new concept that is not supported in the disclosure.” RAN 13. We do not
agree. It is clear from the figures of the Savicki '110 patent that plug connector 20
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and the termination arrangement contained therein do not include any attachment
device for affixing the plug connector or the termination arrangement to the device
box. Instead, plug connector 20 is provided with a latch member 202 for securing
the plug connector (including the termination arrangement) in place in receptacle
360 of electrical wiring device 30, which is provided with mounting screws 342
(Fig. 1) for attaching the electrical wiring device to a “structure” (i.e., a device
box). Savicki '110 specification 4:13-14. The rejection of the claims on this
ground is therefore not sustained.

3. Dependent claims 10-14, 31-34, and 37-40
Prior to the March 2009 Amendments, independent claims 1, 25, and 35 did
not describe the electrical wiring device as including any “user accessible” or
“user-accessible” feature. Instead, the term “user accessible” appeared in only
dependent clams 9, 10, 30, 31, 36, and 37, each directly dependent on one of
claims 1, 25, and 35. Prior to the March 2009 Amendments, claims 9, 30, and 36
each specified that “the electrical wiring device includes at least one user
accessible receptacle disposed in the cover member . . . ,” whereas claims 10, 31,
and 37 each specified that “the electrical wiring device includes at least one user
accessible electrical switch disposed in the cover member . . . .” Savicki '110
patent specification at cols. 6, 8, 9 (emphasis added). Thus, prior to these
amendments, no claim, either directly or indirectly by dependence on another
claims, recited a single wiring device that includes a user accessible receptacle and
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a user accessible switch. However, this combination is now recited in claims 10,
31, and 37 (not amended) as

a result of the amendment of each of parent claims 1, 25, and 35 to recite a user
accessible receptacle.35 The Examiner states that
[r]egarding dependent claim 10 (as amended by virtue of its
dependency), there is no support in the disclosure for a wiring device
including at least one set of user-accessible outlet apertures, user
accessible hot and neutral contacts, or a mounting assembly, and
wherein the wiring device also includes at least one user accessible
electrical switch.
RAN 14-15 (emphasis omitted). According to the Examiner, “the only support for
a wiring device with the very specific structure as recited according to the current
claims appears to relate only to a standard duplex type receptacle.” Id. at 62.
Based on similar reasoning, the Examiner rejected: (i) dependent claims 11,
32, and 38 (reciting that “the electrical wiring device includes a GFCI,”);
(ii) dependent claims 12, 33, and 39 (reciting that “the electrical wiring device
includes an AFCI”); (iii) claims 13, 34, and 39 (reciting that “the electrical wiring
device includes a transient voltage surge suppressor (TVSS)”); and (iv) claim 14
(amended to recite details of the termination arrangement). Id. at 15-18.
Although Patent Owner has acknowledged that “[t]he Examiner has also
rejected dependent claims 10-14 and 31-34, 37-40 by virtue of their dependency

35 The March 2009 Amendments accordingly removed this “user accessible
receptacle” feature from dependent claims 9, 30, and 36.
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from their respective independent claims” (P.O. Br. 14), Patent Owner has not
addressed the merits of the rejection of any of these claims, let alone demonstrated
any error therein. The rejection of claims 10-14, 31-34, and 37-40 under 35 U.S.C.
§ 112, first paragraph is therefore sustained.

4. Conclusion Regarding § 112, First Paragraph, Rejection
The rejection of claims 1-52 under 35 U.S.C. § 112, first paragraph, for
lacking written description support is sustained with respect to claims 10-14, 31-
34, and 37-40 and not sustained with respect to claims 1-9, 15-30, 35, 36, and 41-
52.

E. The Rejection of Claims 1-52 Under 35 U.S.C. § 314(a)36
The Examiner has concluded that amended independent claims 1, 21, 25,
and 35 and new independent claim 48 have enlarged the scope of (i.e., broadened)
original independent claims 1, 21, 25, and 35 in three respects. RAN 22.
The alleged first and second instances of broadening, discussed below, are
based on the amendment of claim 1 to replace the phrase “a ground strap disposed
between the cover member and the body member” with the phrase “a mounting

36 35 U.S.C. § 314(a) provides in relevant part: “In any inter partes reexamination
proceeding under this chapter, the patent owner shall be permitted to propose any
amendment to the patent and a new claim or claims, except that no proposed
amended or new claim enlarging the scope of the claims of the patent shall be
permitted.”
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device having a ground device contact” without reciting that the mounting device
is

disposed between the cover member and the body member. RAN 22.37 According
to the Examiner, “[s]ince the amended/new claims no longer require a ground
strap, or the specific location of the ground strap (i.e., disposed between a cover
member and a body member) they are broader in scope in at least one respect.” Id.

1. Whether “mounting assembly” is broader than “ground strap”
Patent Owner argues that “that the term mounting assembly is either the
equivalent of, or narrower than, the term ground strap” and that “[t]he prior art
teaches that the terms ground strap and mounting strap are synonymous and used
interchangeably,” citing “U.S. Patent Nos. 6,875,940, 7,030,318, etc.” P.O. Br. 18
& n.16. As pointed out by Requester (Req. Resp’t Br. 10), reliance on these
patents is improper because they are not provided in the Evidence Appendix to
Patent Owner’s appeal brief, as required for their consideration in this appeal.
37 C.F.R. § 41.67(c)(1)(ix). Patent Owner further argues that “ground straps

37 Although claims 1, 25, and 35 were amended to employ this or similar
language, claim 21 was instead amended to recite that the device ground contact is
part of a ground plate that is electrically isolated from the mounting assembly.
Claims App. (P.O. Br.).
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always include[] mounting yokes at either end” and that “[s]ince the independent
claims specify that the mounting assembly includes a ground device contact, there
can be no misunderstanding that the recited mounting assembly refers to the
Savicki ground strap 34.” P.O. Br. 19 (footnote omitted). However, even
assuming for the sake of argument that a “ground strap” would have been
understood as necessarily including mounting yokes and thus properly
characterized as a “mounting assembly,” it does not necessarily follow that the
claimed “mounting assembly” would have been understood as necessarily
including such mounting yokes, as required to avoid broadening of the claims
when giving “ground strap” Patent Owner’s definition.
Patent Owner has therefore failed to persuade us of error in the Examiner’s
conclusion that the term “mounting assembly” in amended claims 1, 21, 25, and
35, and new claims 48 is broader than the previously recited “ground strap” and
thus constitutes improper claim broadening under 35 U.S.C. § 314(a).

2. The location of the mounting assembly
Assuming for the sake of argument that the new claim term “mounting
assembly” in claim 1 is not broader than the previously recited “ground strap,” we
agree with the Examiner’s conclusion that the failure of the claims to specify that
the mounting assembly is disposed between the cover member and the body
member broadens the scope of the claim in this respect. Patent Owner argues that
this positional relationship is inherent for the following reason:
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[T]he ground device contact 346 [of the mounting assembly] positions
the mounting assembly between the cover member 32 and the body
member 36 because the ground device contact is one of the plurality
of device contacts. The plurality of device contacts are accessible via
the

rear receptacle in the interior of the device, i.e., between the cover and
the body.
P.O. Br. 19. We understand Patent Owner’s position to be that because the ground
device contact is recited as being accessible by a plug connector inserted into a
receptacle in the back wall of the body member, the mounting assembly, which
includes the device ground contact, is necessarily located between the cover and
the body. For the reasons given below, we agree with Requester that “amended
claim 1 would now cover a ground strap on the back surface of the receptacle body
as disclosed in the [parent] Benoit ‘585 patent, which ground strap arrangement
would have been excluded in each of the original claims of the patent.” Req.
Resp’t Br. 9.38
Figures 1B and 2 of the Benoit patent are reproduced below.

38 Patent Owner has not addressed this argument by Requester.
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Figure 1B is a perspective view of the electrical wiring system in accordance with
the invention described in Benoit. Benoit 3:36-37.
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Figure 2 is a cross-sectional view of the electrical wiring system depicted in
Figure 1B. Id. at 3:38-39. The wiring device depicted in these figures includes a
body 300, a strap element 302, a cover 304, a power input receptacle 306 in the
rear of body 300, receptacle contacts 308, and a ground chassis 310. Id. at 4:52-55.
Plug 20, which is insertable into power input receptacle 306, has plug contacts 202
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for engaging receptacle contacts 308. Id. at 4:39-43, 55-56. As correctly pointed
out by Requester, strap element 302 is disposed on the back of body 300 rather
than disposed between body cover 300 and cover 304. Req. Resp’t Br. 9.
Furthermore, it is physically possible to modify strap element 304, without
disposing any portion of the strap element between the cover member and the body
member, to include (within receptacle 360) a device ground contact configured to
mate with the corresponding plug contact 202 in plug 20.
We therefore agree with the Examiner that the failure of claims 1, 21, 25, 35,
and 48 to specify that the mounting assembly is disposed between the cover
member and the body member constitutes improper claim broadening under
35 U.S.C. § 314(a). The rejection of these claims is therefore also sustained for
this reason.

3. A receptacle accepting a plurality of device contacts
Original claims 1, 21, 25, and 35 specified that the “the body member
includ[es] a receptacle configured to accept the plug connector and a plurality of
device contacts.” Savicki '110 patent, cols. 6-9 (emphasis added). Figure 2 of
Savicki '110 (not reproduced herein) shows the ground device contact 346
extending into receptacle 360 of body member 36 and also shows a plug 20 that
has been inserted into receptacle 360 to engage this and the other device contacts.
These claims as amended and new claim 48 recite “a body member including a
back wall, . . . the back wall including a receptacle configured to accept the plug
connector.” Claims App. (P.O. Br.) (amendatory underlining and bracketed text
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omitted; emphasis added). The Examiner concluded that “[s]ince the
amended/new claims no longer require that the receptacle in the body member also
accept a plurality of device contacts, they are broader in scope in at least one
respect.” RAN 22. Patent Owner appears to misconstrue the Examiner’s position
by arguing that the claim has not been broadened because the deleted phrase “a
plurality of device contacts” was effectively replaced by recitations of “a hot
device contact” and “a neutral device contact.” P.O. Br. 19.
Because Patent Owner has failed to persuade us of error in the Examiner’s
conclusion that claims 1, 21, 25, 35, and 48 are broader than the original claims by
not reciting that the receptacle accepts the plurality of device contacts, we also
sustain the rejection of these claims for this reason.

4. Conclusion Regarding the § 314(a) Rejection
The rejection of claims 1, 21, 25, 35, and 48 under 35 U.S.C. § 314(a) for
improper broadening is sustained, as is the rejection on that ground of all of their
dependent claims (viz., claims 2-20, 22-24, 26-34, 36-47, and 49-52), which are not
separately argued.

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F. The Examiner’s Case for the Prima Facie Obviousness of Claims 1-6, 8-11, 25,
31, 32, 35-38, 44, and 47-5239
The independent claims in this claim group are claims 1, 25, 35, and 48.40
Claim 1 stands rejected under 35 U.S.C. § 103(a) on the following alternative
grounds, which as noted above are referred to by Patent Owner (P.O. Br. 23) as the
“first alternative rejection” and the “second alternative rejection”:
(a) obviousness “over Heimann in view of that which is well known in the
art (as evidenced by either of Bonilla, Mehta '350, or Mehta '657).” RAN 23
(emphasis omitted).41
(b) obviousness “over Heimann in view of that which is well known in the
art (as evidenced by either of Bonilla, Mehta '350, or Mehta '657), and further in
view of that which is well know[n] in the art (as evidenced by either of First Alert,
BRK, or Libby).” Id. at 26 (emphasis omitted).

39 Patent Owner discusses this first set of claims in section F at pages 19-30 of the
appeal brief.
40 Independent claim 21, which is directed to the “isolated ground plate”
embodiment depicted in Figure 5, is included in the second set of claims addressed
in section G at pages 30-31 of Patent Owner’s appeal brief.
41 As explained below, in discussing this ground of rejection the Examiner also
contends that the claimed subject matter would have been obvious over Heimann
based on design choice.
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Claims 25, 35, and 48 are rejected on the same alternative grounds as claim 1. Id.
at 43, 49, and 55.42
For the reasons given below, it is not necessary to reach the merits of the
Examiner’s reliance on First Alert, BRK, or Libby in the second alternative
rejections.

1. Whether Heimann Discloses the Recited “Plurality of AC Electric
Power Transmitting Wires” and “Plug Connector”
The principal issue regarding the Examiner’s reliance on Heimann is
whether the identical preambles of independent claims 1, 21, 25, 35, and 48
preclude the recited “plurality of AC electric power transmitting wires” from being
read on the combination of Heimann’s cables 120 and 140 (discussed below).
Claim 1, for example, reads in relevant part as follows:
An electrical wiring system for use in an AC electrical power
distribution circuit including a plurality of AC electric power
transmitting wires disposed between an AC power distribution point
and a device box, the plurality of AC electric power transmitting wires
being routed into an interior portion of the device box, the system
comprising:

42 In the rejections of independent claims 25, 35, and 48, the first and second
alternative grounds are combined to read “over Heimann in view of that which is
well known in the art (as evidenced by either of Bonilla, Mehta '350, or Mehta
'657), or alternatively further in view of that which is well know[n] in the art (as
evidenced by either of First Alert, BRK, or Libby).” Id. at 43, 49, and 55
(emphasis omitted).
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a plug connector including a plurality of plug contacts and a
termination arrangement configured to terminate the plurality of AC
electric power transmitting wires . . . ; and
an electrical wiring device including . . . .
Claims App. (P.O. Br.) (italics added; underlining and bracketed text omitted).
Heimann discloses electrical receptacle or switch assemblies adapted for
modular connection to conventional cables. Heimann 1:9-12. Figure 1 of
Heimann is reproduced below.

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Figure 1 is an exploded perspective view of a conventional utility box with an
interconnector and switch or outlet module according to Heimann’s invention. Id.
at 2:41-43. A typical electrical cable 120 can be routed to the vicinity of a
conventional utility box 100 and then connected to the interconnector 155, which
comprises a clamp receptacle 130 connected via an interconnect cable 140 to an
interconnect plug 150. Id. at 2:68-3:4. Clamp receptacle 130, cable 140 and plug
150 preferably comprise a single interconnect assembly or harness 155. Id. at 3:4-
6. A function module 160 includes interconnect jacks 170, a ground strip 180
having mounting ears 184, and a front plate 166. Id. at 3:6-9. Function module
160 may include a preformed outlet receptacle for receiving the blades and pin of a
typical grounded electrical plug. Id. at 4:34-38.
Figures 2 and 3 of Heimann are reproduced below.
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Figures 2 and 3 are perspective views of clamp receptacle 130 in its unassembled
and assembled configurations, respectively. Id. at 2:44-47. As shown in Figure 2,
after being stripped to expose a predetermined length of its several conductors 122,
cabling 120 is inserted into the clamp receptacle 130. Id. at 3:16-18.
Figures 5 and 6 of Heimann are reproduced below.
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Figures 5 and 6 are perspective and sectional views of plug 150. Id. at 2:50-55.
Numerals 156 identify three plug ferrules that terminate the ends of the wires of
interconnect cable 140. Id. at 4:24-27.
The Examiner reads the recited “plurality of AC electric power transmitting
wires” on the series combination of cables 120 and 140 (Fig. 1), the “plug
connector” on plug 150, and the “termination arrangement configured to terminate
[a] the plurality of AC electric power transmitting wires” on ferrules 156 in plug
150. RAN 23. Patent Owner argues that reading the recited “plurality of AC
electric power transmitting wires” on Heimann’s cables 120 and 140 is contrary to
the claim preamble, which Patent Owner appears to interpret as limiting the recited
“plurality of AC electric power transmitting wires” to wires that were routed into
the interior of the device box during a rough-in phase that was completed prior to
the act of terminating those wires with the “termination arrangement” in the “plug
connector.” Specifically, Patent Owner contends that
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[t]he preamble of each independent is directed to rough-in phase.
Each preamble recites that the AC wiring is disposed between the AC
distribution point and the device box, and routed into the interior of
the device box. The claimed plug connector includes a termination
arrangement that terminates the AC wiring routed into the interior of
the device box; neither the plug connector nor the termination
arrangement [is] affixed to the device box after termination.
P.O. Br. 19-20 (footnote omitted). See also id. at 23 (“Taking the claimed subject
matter as a whole, the claimed invention counter-intuitively adds both a component
and a process step (terminating the AC wires directly to a plug connector) to the
rough-in phase (as recited in the preamble).”).
We are unpersuaded by this argument for the following reasons. In the first
place, the preambles are entitled to no weight because the body of claim 1 and the
other independent claims define a structurally complete invention. As stated in
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.
2002) (citations omitted):
In general, a preamble is construed as a limitation if it recites
essential structure or steps, or if it is “necessary to give life, meaning,
and vitality” to the claim. A preamble is not limiting “where a
patentee defines a structurally complete invention in the claim body
and uses the preamble only to state a purpose or intended use for the
invention.”
Furthermore, we do not agree that the preamble, if given weight, would
restrict the recited “plurality of AC electric power transmitting wires” to wires that
were routed into the interior of the device box during a rough-in phase that was
completed prior to terminating those wires with the “termination arrangement” in
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the “plug connector.” The preamble does not mention a “rough-in” phase or
otherwise indicate that the recited “plurality of AC electric power transmitting
wires” of the “electric power distribution circuit” are routed to the interior of the
device box prior to using the plug connector (more particularly, the termination
arrangement therein) to terminate these wires. Thus, this is not a case where a
process limitation in a product claim implies a structural limitation that
distinguishes the apparatus from the prior art, as discussed in In re Hallman,
655 F.2d 212, 215 (CCPA 1981). Claim 1 is therefore broad enough to permit the
recited “plurality of AC electric power transmitting wires” to be extended into the
interior of the recited device box at the same time that these wires are terminated
by plug connector, as disclosed by Heimann. That is, cable 140 of Heimann’s
interconnector 155 is used to extend the recited “plurality of AC electric power
transmitting wires” (which also includes cable 120) into the interior of utility box
100 at the same time that plug 150 is used to terminate the “plurality of AC electric
power transmitting wires.”
The Examiner, in correctly reading the recited “plurality of AC electric
power transmitting wires” on cables 120 and 140, stated that “the interconnect
wires (140) are considered an integral part of the ‘plurality of AC [electric] power
transmitting wires’” and that these AC power transmitting wires “are terminated
only by the plug connector (150).” RAN 26-27 (emphasis added). Patent Owner
misapprehends the Examiner’s position by stating that “the Examiner asserts that
Heimann teaches that the AC wires 122 and harness wires 140 are ‘integral’” and
arguing that “[t]he Examiner’s analysis is factually incorrect because Heimann
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expressly teaches that AC wires 122 and harness wires 140 are not integrally
formed.” P.O. Br. 23. The Examiner’s description of interconnect wires 140 as
“an integral part” of the plurality of power transmitting wires does not imply that
wires 140 are (or obviously can be) integrally formed with wires 120.
Furthermore, as noted by Requester (Req. Resp’t Br. 15), claim 1 does not require
that the recited “plurality of AC electric power transmitting wires” be integrally
formed. Nor do any of claims 21, 25, 35, and 48 include such a requirement.
Patent Owner further argues that Heimann’s harness 155 is affixed to the
device box via clamp 130,” citing Heimann at 3:52-56. P.O. Br. 24. Although the
independent claims recite that “the plug connector and the termination arrangement
[do] not include[e] any attachment device configured to affix the plug connector
and the termination arrangement to the device box,” they do not preclude the
recited “plurality of AC electric power transmitting wires” (i.e., Heimann’s cables
120 and 140) from being joined together by an element (i.e., clamp receptacle 130)
that is attached to the device box.
Because we are not persuaded that the Examiner erred in reading the recited
“plurality of electric power transmitting wires” on cables 120 and 140 and reading
the recited “plug connector” and termination arrangement” on Heimann’s plug 150
and ferrules 156, it is not necessary to discuss the merits of the Examiner’s
alternative reliance on “First Alert, BRK, or Libby” in the second alternative
rejections of independent claims 1, 25, 35, and 48 (and independent claim 21,
discussed infra) and their dependent claims. However, we note in passing that the
second alternative rejection assumes that the recited “plurality of AC electric
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power transmitting wires” cannot be read in part on Heimann’s cable 140, in which
case “the whole interconnector (155) must be construed to constitute the [recited
‘plug connector’ and] ‘termination arrangement.’” RAN at 27. Under these
circumstances and because clamp receptacle 130 of interconnector 155 is attached
to the device box, Heimann would fail to satisfy the above-noted claim
requirement that “the plug connector and the termination arrangement not includ[e]
any attachment device configured to affix the plug connector and the termination
arrangement to the device box.” The second alternative rejections allegedly cure
this deficiency by relying on “First Alert, BRK, or Libby” for a teaching of
replacing Heimann’s clamp receptacle 130 with wire nuts. RAN 27-28. Because
this modification of Heimann is not required to satisfy any of the independent
claims, we are treating “First Alert, BRK, or Libby” in the second alternative
rejections as cumulative to Heimann.

2. Whether It Would Have Been Obvious in View of Bonilla,
Mehta '350, or Mehta '657 To Replace Heimann’s Hot and Neutral
Contact Assemblies with the Claimed Contact Assemblies
Figures 7 and 8 of Heimann are reproduced below.
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Figures 7 and 8 are respectively a sectional view and an exploded view showing
subcomponents of Heimann’s outlet module 160 when configured as an outlet
receptacle having slots 164a, 164b, and 164c for receiving the blades and pin of a
typical grounded electrical plug (in dashed lines). Heimann 4:32-39. As shown in
Figure 8, the internal conductive portions include: (i) a hot strip 182a having blade
spring clips 174a and pins 172; (ii) a common strip 182b having blade clips 174b
and pins 172; and (iii) a ground strip 180 having pin spring clips 176, unnumbered
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pins (hereinafter also 17243), and mounting ears 184. Id. at 4:39-43, 50-59. As
shown in Figure 7, pins172 of hot strip 182a , common strip 182b, and ground strip
180 extend into an aperture in the back wall of receptacle for engaging ferrules 156
of plug 150 (not shown). Id. at 4:43-47.
Comparing claim 1 to Figure 8, the Examiner finds that the recited hot
contact and neutral contact assemblies correspond to hot strip 182a and common
strip 182b, each of which has a lateral interconnective portion (unnumbered), and
also that these strips each have at least one user-accessible contact structure (174a,
174b) offset therefrom and a hot device contact (172) or a neutral device contact
(172) offset therefrom. RAN 24-25. However, as shown in Figure 8, the major
surface of the lateral connective portion of each of strips 182a and 182b is
perpendicular to the lateral side walls of function module 160. The Examiner,
presumably also finding that strips 182a and 182b are linear, therefore concedes
that “Heimann does not specifically disclose the hot contact assembly and the
neutral contact assembly being characterized by a non-linear configuration along a
major longitudinal access thereof with the lateral interconnective portion having a
major surface disposed substantially parallel to the lateral side walls [of the body
member],” as required by claim 1. RAN 25 (emphasis added). To remedy these
deficiencies in Heimann, the Examiner begins by relying on the following “design
choice” rationale:
[I]n view of the relatively limited number of configurations (linear or
non-linear) and orientations (parallel or normal) with a reasonable

43 These ground pins are labeled 172 in Figure 10.
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expectation of success, it is considered that it would have been an
obvious design choice within the skill of a person of routine ability in
the art to choose among the limited configurations and shapes so as to
arrange the contact assemblies to have a non[-]linear shape with a
major surface parallel to a side wall.
RAN 25. Although this line of reasoning is arguably consistent with the KSR
principle that “[w]hen there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), we are
not prepared to assume, without supporting evidence, that the recited non-linear
and parallel orientations of contact assemblies were known in the art.44
That brings us to the Examiner’s reliance on Bonilla, Mehta '350, or ‘Mehta
'657 for a suggestion of replacing Heimann’s hot and neutral contact strips 182a
and 182b with contact strips having the claimed configuration. RAN 26. Of these
references, the Examiner primarily discusses Mehta '350, Figure 3 of which is
reproduced in part below.

44 It is therefore not necessary to address Patent Owner’s argument that “[d]esign
choice is only appropriate under MPEP 2144.04 when the claimed invention is
directed to ‘a rearrangement of parts disclosed in a single reference...without
modifying the operation of the device.’” P.O. Br. 27.
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Figure 3 is an exploded perspective view of the components of a receptacle in
accordance with Mehta '350. Mehta '350 at 2:65-67. The terminals 18 and 20 are
formed from successive blanks cut from a flat sheet of metal and bent to the final
configuration. Id. at 5:15-17. Mehta '350 explains that the terminals are “designed
to minimize the number of bends necessary to provide the final configuration, and
to ensure good contact with the plug blades throughout movement thereof when
being inserted into and withdrawn from the female contacts of the terminals.” Id.
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at 2:28-33. As shown in Figure 3, the major surface of the lateral interconnective
portion of each of terminals 18 and 20 is parallel to lateral side walls 56 of the
base 14, as required to satisfy the claims.
The details of one of terminals 18 and 19 are illustrated by Figures 8-10,
reproduced below.

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Figures 8-10 are side elevation views and a top plan view of one of terminals 18
and 19. Id. at 3:7-11. Flared end portions 120, 120' and 122, 122' provide entry
means for the blade 124 of an electrical plug inserted linearly in the direction of
arrow 126 (Fig. 8). Id. at 5:40-45. The recited “major surface area” of a “lateral
interconnective portion” is broad enough to read on wall portions 104 and 104'.
The Examiner found that the terminals disclosed in Mehta '657 and Bonilla
are similar to those disclosed in Mehta '350. RAN 26. Patent Owner refers to all
three of these references collectively as “Bonilla/Mehta.” P.O. Br. 24.
We agree with the Examiner’s conclusion that it would have been prima
facie obvious in view of Mehta '350 to replace each of Heimann’s hot contact
assembly (i.e., strip 182a, clips 174a, and pins 172) and neutral contact assembly
(i.e., strip 182b, clips 174b, and pins 172) with a contact assembly formed by
appropriately bending blanks cut from a strip of electrically conductive sheet metal
in order to achieve, in the words of Mehta '350, “economy of manufacture.” Mehta
'350 at 1:32-33. As explained by the Examiner, such a modification is consistent
with the KSR principle that “it would have been obvious to apply a known
technique to a known device ready for improvement to yield predictable results.”
RAN 88. See KSR, 550 U.S. at 417 ([I]“if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”). Specifically, it would have been
apparent to one skilled in the art that positioning terminals 18 and 20 of Mehta '350
in Heimann’s receptacle 160 (Fig. 7) with the major surfaces of their lateral
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interconnective portions parallel to a lateral side wall of the receptacle will permit
the contacts provided by second and third wall portions 114/118 and 114'/118'
(corresponding to Heimann’s clips 174a and 174b) to receive the blades of the
appliance plug shown in dotted lines in Heimann’s Figure 7. It further would have
been obvious that Heimann’s pins 172 (for engaging plug connector 150) can be
implemented by providing the blanks with additional contacts in the form of
further bent portions and walls. See RAN 74 (“[T]he additional device contact
[172] as suggested by Heimann could be economically formed from a lateral
interconnective portion by a mere one or two folds depending on the initial shape
of the cont[]act structure blank.”).45
Patent Owner argues that for the following reasons an artisan modifying
Heimann’s function module 160 in view of Mehta '350 would not have positioned
the terminals with the major surfaces of their lateral interconnective portions
“fac[ing] away” from the inserted end of plug connector 150, as allegedly required
to satisfy the claims:
Both Heimann and Bonilla/Mehta include a two-piece
construction that positions the major surface of the flat contact
structure to face the connector element: Heimann’s pins 172 are
mounted normal to the major surface of the contact strips (180, 182)
which are positioned to face the inserted end of plug connector 150;
and the major surface of terminals 18, 20 (Mehta '350) also face the
screws 22, which are also mounted normal to the major surface of

45 Such a modification of Heimann’s contact assemblies would also require
replacing ferrules 156 of Heimann’s plug connector 150 with suitable blade
contacts.
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terminals 18, 20. Mehta '350 at Fig. 3. The contact assemblies (42,
44) of Savicki ['110], on the other hand, employ a one-piece
construction whereby the major surface of each lateral interconnective
portion counter-intuitively faces away from the inserted end of the
plug connector. Savicki ['110] at Figs. 1, 3 and 5.
This structure is clearly recited in each independent claim 1, 21,
25, 35, and 48, which recite a “contact assembly includ[ing] a lateral
interconnective portion having a major surface disposed substantially
parallel to the lateral side walls...including a device contact structure
substantially offset [therefrom] such that a hot device contact and a
neutral device contact...are disposed within an interior portion...the
device contacts mate with the plug contacts when the plug connector
is inserted into the receptacle.” The receptacle is recited in each
independent claim as being formed in the back of the wiring device.
Thus, the lateral interconnective portion faces away from the inserted
end of the plug connector.
P.O. Br. 24-25. To the extent “faces away” means faces in a direction
perpendicular to the plug insertion direction, we are unpersuaded for the reasons
given above regarding why it would have been obvious in Heimann to position the
contact assemblies suggested by Mehta '350 with the major surfaces of the lateral
interconnective portions parallel to the blade insertion direction of the appliance
plug. On the other hand, to the extent Patent Owner’s position instead is that
“faces away” means that the outer surface of the lateral interconnective portion
faces way from the side of the inserted plug connector, we are unpersuaded for the
following reason, even though this positional relationship is suggested by Figure 3
of Savicki '110. That is, it is apparent from this figure in Savicki '110 that insertion
of a plug to engage device contacts 422 and 442 will cause an end portion of the
plug end to enter the space between the lateral interconnective portions of contact
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assemblies 42 and 44, with that the result that the outer major surface of each
lateral interconnective portion faces way from the side surface of the end portion of
the inserted plug connector. However, Patent Owner has not explained, nor is it
otherwise apparent, why the claim language recites or implies this positional
relationship.
Bonilla and Mehta '657 are each cumulative to Mehta '350.
For the foregoing reasons, are not persuaded of error in the Examiner’s
conclusion that the subject matter of claims 1, 25, 35, and 48 would have been
prima facie obvious over Heimann considered in view of any of Bonilla, Mehta
'350, and Mehta '657, the combination of references common to the first and
second alternative rejections.

3. The Dependent Claims
The dependent claims that are separately argued by Patent Owner are
claims 6 and 47. P.O. Br. 30.
Claim 6 as amended reads as follows:
6. (amended) The system of claim [5]1, wherein [the plurality
of wires includes a ground conductor]an exterior non-conductive
portion of the plug connector is disposed between the hot contact
assembly and the neutral contact assembly when the plug connector is
inserted into the receptacle and the plurality of device contacts are
mated with the plurality of plug contacts.
Claims App. (P.O. Br.). Claim 47, which depends on claim 35, recites the same
subject matter. Id.
The Examiner stated:
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Regarding claim 6, in the wiring system as suggested by
Heimann as applied to claim 1 above, an exterior non-conductive
portion (158) of the plug connector (150) is disposed between the hot
contact assembly and the neutral contact assembly when the plug
connector is inserted into the receptacle (170) and the plurality of
device contacts (172) are mated with the plurality of plug contacts
(156).
RAN 31 (emphasis omitted). Patent Owner argues that “a comparison of Heimann
Figs. 5-7 reveals that . . . Heimann plug 150 is disposed adjacent to the contact
strips (182a, 182b) and not between them when plug 150 is inserted into jack 170.”
P.O. Br. 30. Patent Owner appears to be limiting the recited hot and neutral
contact assemblies to Heimann’s hot and neutral strips 182a and 182b,
respectively. However, Heimann’s hot and neutral contact assemblies also include
clips 174a/174b and pins 172. Thus, when a plug 150 is inserted into engagement
with a pair of pins 172 of Heimann’s hot and neutral contact assemblies, a central
exterior region of one or both of the wide sides of the plug will be located between
the hot and neutral assemblies. The claim language will be satisfied in the same
way when Heimann is modified as described above in view of Bonilla, Mehta '350,
and Mehta '657.
We are therefore not persuaded of error in the Examiner’s conclusion that
the subject matter of dependent claims 6 and 47 would have been prima facie
obvious over Heimann considered in view of any of Bonilla, Mehta '350, and
Mehta '657. We reach the same conclusion with respect to dependent claims 2-5,
8-11, 31, 32, 36-38, 44, 47, and 49-52, whose merits are not separately argued.
5. Conclusions Regarding the Prima Facie Obviousness
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of the First Claim Set Under § 103(a)
We are not persuaded of error in the Examiner’s conclusion that the subject
matter of the first set of claims (viz., claims 1-6, 8-11, 25, 31, 32, 35-38, 44, and
47-52) would have been prima face obvious over Heimann considered in view of
Bonilla, Mehta '350, or Mehta '657, which are the only references argued by Patent
Owner in response to the first alternative rejections. Because we agree with the
Examiner that the recited “plurality of AC electric power transmitting wires”’ reads
on Heimann’s cables 120 and 140, we find that First Alert, BRK, and Libby, relied
on in the second alternative rejections of the first set of claims, are cumulative to
Heimann. Thus, we are not persuaded of error in the Examiner’s conclusion that
the subject matter of claims 1-6, 8-11, 25, 31, 32, 35-38, 44, and 47-52 would have
been prima facie obvious over the prior art applied in the first and second
alternative rejections.
Patent Owner’s evidence of secondary considerations is addressed infra,
following the discussion of the obviousness rejections of the remaining claims.

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G. The Examiner’s Case for the Prima Facie Obviousness of Claims 7, 12-24, 26-
30, 33, 34, 39-43, 45, and 4646
1. Claims 17-21 (isolated grounding)
Claim 21, as noted above, is directed to the isolated ground plate
embodiment depicted in Figure 5 of Savicki ‘110. The relevant claim language
reads “a ground plate substantially disposed between the hot contact assembly and
the neutral contact assembly and electrically isolated from the mounting assembly,
the ground plate including a device ground contact.” Claims App. (P.O. Br.)
(underlining and bracketed text omitted). Similar language appears in claims 17-
20, which depend on claim 1. Id.
For a teaching of an isolated ground plate, the Examiner relies on either of
Sundquist and Leviton. See RAN 42, incorporating discussion (id. at 38-40) of
dependent claims 17 and 18, which recite this feature. Claims App. (P.O. Br.).
Figures 1 and 2 of Sundquist are reproduced below.

46 As noted above, this second set of claims is discussed in paragraph G at pages
30-31 of Patent Owner’s appeal brief.
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Figures 1 and 2 are back and right-side views, partially broken away, of
Sundquist’s grounding receptacle. Sundquist 1:43-48. A U-shaped mounting strap
58 extends along a recess 25 on the back surface and also extends around the ends
of the body of the receptacle. Id. at 2:18-20, 64-68. U-shaped grounding contacts
34 and 36 are electrically isolated from the mounting strap by an insulating strip
54. Id. at 2:31-33; 3:9-13. Sundquist explains that isolated grounding avoids the
introduction of unwanted interference in electronic and communications
installations. Id. at 1:25-30.
Leviton provides a similar explanation of isolating grounding at page 1,
under the heading “Isolated-Grounding Receptacles.” Leviton also explains under
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the heading “Mounting Straps,” that its “Specification Grade” receptacles use the
“wrap-around” type rather than the “through” type of mounting strap. Id.
We agree with the Examiner’s conclusion that it would have been obvious in
view of Sundquist or Leviton to further modify Heimann as already modified
above (i.e., as modified to replace hot and neutral strips 182a and 182b with
contact assemblies like those disclosed in Bonilla, Mehta '350, or Mehta '657) by
replacing Heimann’s ground strip 180 with a “wrap-around” mounting strap that
has the mounting ears and is electrically isolated from a ground contact assembly
having ground contacts corresponding to pins 172 and clips 176 of ground strip
180. Patent Owner argues:
Claims 21-24 . . . recite “. . . a mounting assembly coupled to a ground
plate substantially disposed between the hot contact assembly and
the neutral contact assembly and electrically isolated from the
mounting assembly. . . . Both Sundquist and Leviton show isolated
ground straps at the exterior of their respective devices and, therefore,
do not bridge the gap.
P.O. Br. 30. We do not agree. When Heimann’s ground strip 180 is modified in
the manner described above, the ground contact assembly (i.e., the recited “ground
plate”) will be necessarily be “substantially disposed between the hot contact
assembly and the neutral contact assembly” in order to be able to engage the
ground pin of the appliance plug and the ground contact in plug 20. For the
reasons given above, we are also unpersuaded by the argument “the Examiner's
reasons for combining do not have the required ‘rational underpinning’ under KSR
Int’l because they employ circular logic.” Id.
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We therefore are not persuaded of error in the Examiner’s conclusion that
the subject matter of claims 17-21 would have been prima facie obvious over the
applied references.

2. Claims 15, 16, 22-24, 41, 42, and 45 (lateral support member)
Patent Owner also argues, as a group, dependent claims 15, 16, 22-24, 41,
42, and 45, each of which directly or indirectly (by dependence) specifies that the
recited “mounting assembly” includes “at least one lateral support member
connecting the first mounting yoke and the second mounting yoke along a portion
of the body member perimeter.” Claims App. (P.O. Br.). Heimann’s ground strip
180 has the recited first and second mounting yokes 184 but not the recited “at
least one lateral support member” connecting the yokes “along a portion of the
body member perimeter.” For such a teaching, the Examiner relies on either of
Savicki '144 and Misencik, which the Examiner describes as disclosing “the well
known use of lateral support members rigidly connecting the mounting yokes.”
RAN 37.
Misencik discloses receptacles having a shallow housing and also provided
with surge suppressor and isolated ground features. Misencik 1:14-17. This is
accomplished by the use of an insulating circuit board on which components of the
circuit are mounted with board portions that fit in close relation to insulating walls
of the receptacle base. Id. at 2:3-9.
Figure 1 of Misencik is reproduced below.
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Figure 1 shows a front view of a duplex receptacle 10 in accordance with
Misencik’s invention. Id. at 3:16-18. This view of receptacle 10 shows a metal
mounting yoke 14 surrounding a cover portion 12a of a device housing 12. Id. at
3:57-60. Apertures at each end of the mounting yoke permit conventional
mounting of the receptacle in an outlet box. Id. at 3:60; 4:10-12. Numeral 26
identifies a laterally extending isolated ground wire 26 associated with a conductor
on the underside of the device housing. Id. at 4:22-25.
Figure 2 of Misencik is reproduced below.
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Figure 2 shows a side view of the base 12b of device housing 12, absent the front
cover and the mounting yoke but with some of the key interior components shown.
Id. at 4:25-27. As shown in this figure, the ground wire 26 is connected to a
ground strap 64 on the device housing. Id. at 6:1-4.
The Examiner finds that “Misencik teaches that the advantage of such an
arrangement is that it allows for compact and shallow receptacle configuration”
(RAN 37) and also that “[t]hose skilled in the art would also appreciate that the
lateral support elements would also allow for a device that may be stronger and
more rigidly supported to the device box.” Id. at 38.
Savicki '144 discloses a switch assembly including a “through strap” similar
to Misencik’s mounting yoke.
Figure 1 of Savicki '144 is reproduced below.
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Figure 1 is an exploded view of a switch assembly incorporating the internal
through strap of Savicki '144’s invention. Savicki '110 at 2:13-15. The through
strap is identified by numeral 26.
Figure 2 is reproduced below.
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Figure 2 is a front view of the through-strap. Id. at 2:17-18. Through strap 26 is
basically rectangular in configuration having an open central portion 33 formed by
a pair of elongated side members 31, each having reinforcing ribs 32. Id. at 2:49-
54.
Figure 3, relied on by Patent Owner, is reproduced below.

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Figure 3 is a side view of through-strap 26. Id. at 2:66-67. This figure shows a
vertically attached ground tab 30. Id.
Patent Owner argues that the Examiner’s reliance on Misencik’s mounting
yoke 14 and Savicki '144’s through strap 26 is misplaced because
both references include rectangular straps that have ground
connections disposed on the exterior of the devices. A PHOSITA
would not be motivated to combine Savicki '144 or Misencik with
Heimann because they teach away; Heimann provides a ground
connection via plug 150 and ground pin 172 accessible via jack 170.
P.O. Br. 30 (footnote omitted). We do not agree that Heimann teaches away from
the claimed combination. “A reference may be said to teach away when a person
of ordinary skill, upon reading the reference, would be discouraged from following
the path set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). An artisan would have recognized that the teachings of mounting yokes and
through straps having lateral support members in Misencik and Savicki '144 are
separate from Misencik’s teaching of how to make a ground connection to the
device and from Savicki '144’s teaching of how to make a ground connection to the
through strap.
We are therefore not persuaded of error in the Examiner’s conclusion that
the subject matter of claims 15, 16, 22-24, 41, 42, and 45 would have been prima
facie obvious over the applied prior art.

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3. Claims 7, 12-14, 26-30, 33, 34, 39, 40, 43, 44, and 46
Because the merits of these claims are not separately argued, we agree with
the Examiner’s conclusion that their subject matter would have been prima facie
obvious over the applied prior art.

4. Conclusions Regarding the Prima facie Obviousness
of the Second Claim Set Under § 103(a)
We are not persuaded of error in the Examiner’s conclusion that the subject
matter of claims 7, 12-24, 26-30, 33, 34, 39-43, 45, and 46 would have been prima
facie obvious over the prior art applied in the first and second alternative
rejections.

H. Secondary Considerations
As evidence of commercial success and copying, Patent Owner’s appeal
brief relies on: the Bausch Declaration (App. X.E); the 2004 P&S brochure, which
describes Patent Owner’s PlugTail™ system (App. X.F); “three customer
testimonials” (i.e., the “Case History” articles dated August 2004, March 2005, and
July 2005) (App. X.G); the Ayer Declaration (App. X.H); and the Hubbell
SNAPConnect brochure (App. X.I). P.O. Br. 31-32.
Requester, after correctly noting that the June 10, 2010, proposed
amendment was not entered, argues that other than noting the deficiencies of these
declarations in the January 28, 2011, Right of Appeal Notice, there is no indication
that either declaration “was entered separate and apart from the non-entered
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Amendment.” Req. Resp‘t Br. 20, 22. This argument is not addressed in the
Answer, which incorporates by reference the Right of Appeal Notice without
adding further comments. Nevertheless, because the Right of Appeal Notice states
that the declarations were considered and found unpersuasive on the merits without
alternatively indicating that they are not entitled to entry, we assume they were
approved for entry by the Examiner.

1. Commercial Success
Mr. Bausch, the Marketing Director at Pass & Seymour, Inc. (Bausch Decl.
¶ 1), testified as follows:
2. I reviewed Appendix B [sic; II] submitted with the patent
owner’s July 7 [sic; February 447], 2008 Response to the Action
Closing Prosecution. Appendix [II] shows the P&S “Plug Tail”
system that P&S is currently selling, and has been selling since 2004
(the “Case History” brochure “ELECTRICAL DESIGN SYSTEMS
SAVES TIME ON THE JOB - THANKS TO P&S PLUGTAIL™).
3. Since the product’s introduction in the market place, [s]ales
of P&S “Plug Tail” system are as follows:
a. 2004 - $503,182
b. 2005 - $1,882,240
c. 2006 - $2,084,633
d. 2007 - $4,296,689

47 July 7, 2008, is the date when Patent Owner filed a response including the cited
article (as part of Appendix B) in related Reexamination Proceeding 95/000,200.
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e. 2008 - $5,236,977
f. 2009 - $5,255,675
g. 2010 (first quarter) - $1,673,211
4. I reviewed U.S. Pat. No. 6,994,585 (“the Benoit patent”) and
U.S. Pat. No. 7,189,110 (“the Savicki patent”).
5. The commercialized P&S Plug Tail system is the same as
the electrical wiring system disclosed and claimed in the Savicki
patent because, for example, P&S’s Plug Tail system includes a plug
connector device identical to the plug connector shown in Figure 1
and Figure 7 of the Savicki patent and also includes an electrical
wiring device identical to the electrical wiring device shown in
Figures 1 of the Savicki patent. See also pending claim 1 (calling for
an electrical wiring system comprising a plug connector device and an
electrical wiring device, which covers the commercialized P&S Plug
Tail system).

6. Before P&S introduced its Plug Tail system, there was no
market for such a system. P&S’s Plug Tail system essentially created
the market. . . .
Bausch Decl. ¶¶ 2-6.
The “Case History” articles and the Bausch Declaration fail to demonstrate
commercial success of the claimed invention for at least three reasons. The first is
that they do not clearly establish that the PlugTail™ wiring devices described
therein are commensurate in scope with (i.e., included the structural features
recited in) the amended and new claims before us. See Demaco Corp v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (“A prima facie
case of nexus is generally made out when the patentee shows both that there is
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commercial success, and that the thing (product or method) that is commercially
successful is the invention disclosed and claimed in the patent.”). The Bausch
Declaration, in asserting (at ¶ 5) that “[t]he commercialized P&S Plug Tail system
is the same as the electrical wiring system disclosed and claimed in the Savicki
['110] patent,” instead apparently compares the PlugTail™ wiring devices to the
original patent claims. As correctly pointed out by the Examiner, “[s]ince these
are the exact same features that are disclosed and taught in the prior art Heimann
reference, they can not be the features of the claimed invention that establish the
alleged nonobviousness of the invention as currently claimed.” RAN 80. See
Asyst Tech., Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008) (“[E]ven
though commercial embodiments of the '421 invention may have enjoyed
commercial success, Asyst’s failure to link that commercial success to the features
of its invention that were not disclosed in Hesser undermines the probative force of
the evidence pertaining to the success of Asyst’s and Jenoptik’s products.”).
Second, assuming for the sake of argument that the PlugTail™ wiring
devices that were sold included the features in the claims before us, the evidence
fails to establish that the sales were due to the merits of the claimed features, i.e.,
that there is “a nexus between the sales and the merits of the claimed invention.”
See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (“[T]he applicant must submit
some factual evidence that demonstrates the nexus between the sales and the
claimed invention-for example, an affidavit from the purchaser explaining that the
product was purchased due to the claimed features.”). Id.
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The third reason is that the sales figures given in the declaration are
insufficient to establish commercial success. As explained in Huang, 100 F.3d
at 139:
evidence related solely to the number of units sold provides a very
weak showing of commercial success, if any. See Cable Elec. Prods.,
Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888
(Fed. Cir. 1985) (finding that sales of 5 million units represent a
minimal showing of commercial success because “[w]ithout further
economic evidence . . . it would be improper to infer that the reported
sales represent a substantial share of any definable market”); . . . .

2. Copying
The declaration of Mr. Ayer, a technician at Pass & Seymour (Ayer Decl.
¶ 2), is accompanied by photographs allegedly showing that the “Snapconnect”
duplex receptacle device sold by Requester Hubbell, Inc.
is essentially the same as the electrical wiring system disclosed and
claimed by the Benoit and Savicki [‘110] Patents. For example, this
device includes a plug connector device that is essentially the same as
the plug connector shown in Figure 1A and Figure 7 of the Benoit
patent, and Figure 1 and Figure 7 of the Savicki patent (see Photo
Nos. 2 and 3 – “a”), and also includes an electrical wiring device that
is essentially the same as the electrical wiring device shown in Figures
1A and 1B of the Benoit patent, and Figure 1 of the Savicki patent
(see Photo Nos. 2 and 3 – “b”; and 6 and 7). See also pending Savicki
claim 1 (calling for an electrical wiring system comprising a plug
connector device and an electrical wiring device, which covers the
Snapconnect duplex receptacle device). The only difference noted
between the third party system and the Benoit and Savicki patents is
that the receptacle blade contacts are rotated relative to the Benoit
patent.
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Ayer Decl. ¶ 7.
This declaration does not demonstrate that the “Snapconnect” receptacle and
plug connector include the specific features recited in the amended and new claims
before us, as required for copying to serve as evidence of nonobviousness. See
Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1364 (Fed. Cir.
1012) (“[A]s the district court observed, ‘[j]ust as with the commercial success
analysis, a nexus between the copying and the novel aspects of the claimed
invention must exist for evidence of copying to be given significant weight in an
obviousness analysis.’”). Furthermore, “a showing of copying is only equivocal
evidence of non-obviousness in the absence of more compelling objective indicia
of other secondary considerations.” Ecolochem, Inc. v. Southern California Edison
Company, 227 F.3d 1361, 1380 (Fed. Cir. 2000). Patent Owner has not provided
any more compelling indicia of other secondary considerations.

I. Conclusion Regarding the Obviousness Rejections
Because Patent Owner’s evidence of the alleged commercial success and
copying is unpersuasive, we sustain all of the Examiner’s rejections of claims 1-52
under 35 U.S.C. §103(a).

III. DECISION
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1. The rejection of claims 1-52 under 35 U.S.C. § 112, second paragraph, is
sustained with respect to claims 5, 6, and 25-34 and not sustained with respect to
claims 1-4, 7-24, and 35-52.
2. The rejection of claims 1-52 under 35 U.S.C. § 112, first paragraph for
lacking written description support is sustained with respect to claims 10-14, 31-
34, and 37-40 and not sustained with respect to claims 1-9, 15-30, 35, 36, and 41-
52.
3. The rejection of claims 1-52 under 35 U.S.C. § 314(a) for improper
broadening is sustained.
4. All of the rejections of claims 1-52 under 35 U.S.C. § 103(a) are
sustained. These rejections are listed in the attached Appendix -- Tables of
Rejections.
The Examiner’s decision that claims 1-52 are unpatentable is therefore
affirmed.
Requests for rehearing in inter partes reexamination proceedings are
governed by 37 C.F.R. § 41.79. Extensions of time in connection with requests for
rehearing are addressed in 37 C.F.R. § 41.79(e).
AFFIRMED

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79
ack

For Patent Owner:

BOND, SCHOENECK & KING, PLLC
10 BROWN ROAD, SUITE 102
ITHACA NY 14850-1248

For Third Party Requester:

ROYLANCE, ABRAMS, BERDO & GOODMAN, LLP
1300 19TH STREET NW, SUITE 600
WASHINGTON, DC 20036

Enclosure: Appendix – Tables of Rejections
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Appendix – Tables of Rejections
Table 1: First alternative rejections (i.e., rejections not based on “FirstAlert, BRK, or Libby”) 1
Claims Heimann in
view of
“Bonilla,
Mehta ‘350,
or
Mehta ‘657”
“Bowden
or
Crofton”
Haun Tibolla “FirstAlert,
BRK, or
Kruse”
“Misencik or
Savicki ‘144”
“Sundquist
or
Leviton”
Tansi Bryant “Pass &
Seymour
or
Kruse”
1-6, 9-11,
25, 31, 32,
35-38, 44,
47, 48, 51,
522
x
7 x x
12, 33, 39 x x x
13, 34, 40 x x x
14 x x x
15, 16, 41,
42, 45
x x
17, 18, 21,
43, 46
x x
19, 22-24 x x x
20 x x x3 x
26-28 x x
29, 30 x x

1  Because claims 8, 49, and 50 are rejected for obviousness over Heimann in view of “Bonilla, Mehta ‘350, or
Mehta ‘657” and (not alternatively) further in view of “FirstAlert, BRK, or Libby” (RAN 33, 57-58), these claim are listed in only Table 2.
2 Claim 52 is not identified in the statement of the rejection at RAN 55 but is discussed at RAN 57.
3 Sundquist only.
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Appendix – Tables of Rejections
Table 2: Second alternative rejections (i.e., rejections based on “FirstAlert, BRK, or Libby”)4
Claims Heimann in
view of
“Bonilla,
Mehta ‘350,
or
Mehta ‘657,”
further in
view of
“FirstAlert,
BRK, or
Libby”
“Bowden
or
Crofton”
Haun Tibolla “FirstAlert,
BRK, or
Kruse”
“Misencik or
Savicki ‘144”
“Sundquist
or
Leviton”
Tansi Bryant “Pass &
Seymour
or
Kruse”
1-6, 8-11,
25, 31, 32,
35-38, 44,
47-525
x
12, 33, 39 x x
13, 34, 40 x x
17, 18, 21,
43, 46
x x
19, 22-24 x x x
20 x x x6 x
26-28 x x
29, 30 x x x
41, 42, 45 x x

4  The rejection of claims 7 and 14-16 is not (alternatively or otherwise) based on “FirstAlert, BRK, or Libby.” RAN 33, 36. These claims are therefore listed in
only Table 1.
5 Claim 50 is not identified in the statement of the rejection at RAN 57 but is discussed at RAN 58.
6 Sundquist only.